PROTECTING TRADEMARKS AGAINST CYBERSQUATTING – PRACTICES IN ASIA

Cybersquatting is defined by the Internet Corporation for Assigned Names and Numbers (ICANN) as the general bad faith registration of another’s trademark in a domain name. The cybersquatter would usually offer to sell the domain name to the trademark owner at an inflated price, in order to generate a high profit. Due to the recent flourishing of e-commerce startup activities and the availability of a large number of inexpensive internet domain names in Asia, instances of cybersquatting are growing.

This potential for cybersquatting has further grown since ICANN began issuing new generic top level domains (gTLDs) in 2013, such as .xyz, .club, .email, as well as those ones in non-alphanumeric languages including Chinese and Arabic. The World Intellectual Property Organization (WIPO) reported that in 2015 disputes related to new gTLDs accounted for 10.5 percent of its Uniform Domain-Name Dispute-Resolution Policy (UDRP) caseloads. In Asia, the Hong Kong office of Asian Domain Name Dispute Resolution Center (ADNDRC) administered 25 disputes relating to new gTLDs during 2015 and 2016, which consists of 9.9 percent of its UDRP caseload in those two years.

The global scope of cybersquatting makes it extremely difficult to control. In-house counsels note that their companies are potentially facing cybersquatting threats when their trademarks link to a website that belongs to another party. Often, the link directs internet users to a non-functioning website. Other times, the domain directs someone to a functioning website that is comprised primarily of advertisements for counterfeit products bearing the infringed trademark. ICANN offers the ‘WHOIS Lookup’ service which allows anyone to find out the name and address of a domain name owner. This also allows parties to check whether there is a reasonable explanation for the use of their domain name by another party or if the registrant is willing to sell the name at a reasonable price.